Be careful with catalogs

The TTAB recently clarified the standard under which the USPTO will accept sales catalogs as trademark specimens for goods. In a precedential decision, the Board affirmed a refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN, for industrial machine parts, because the catalog Tsubaki submitted as a specimen was merely advertising material and failed to show proper trademark use.

The Board emphasized the already-existing rule that catalogs must satisfy the following requirements to be acceptable as specimens for goods:

  • Include a picture or a sufficient description of the relevant goods;
  • Show the mark in association with the goods; and
  • Include the information necessary to order the goods.

The Board concluded that Tsubaki's catalogs did not contain the information necessary to order the goods, because they merely provided Tsubaki's name, phone number, and website domain name, and did not provide an actual sales form or ordering information.

This decision therefore highlights the importance of ensuring that catalogs submitted as specimens for goods contain not only company contact information, but also specific information related to actually ordering the goods, such as: offers to accept orders, pricing information, instructions for placing orders, sales forms, and shipping information.

The Board's decision can be found here.